Intellectual Property Rights in India

A Blog to discuss Intellectual Property Law Issues concerning India.

Monday, June 09, 2008

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NEW DELHI: Corporate India is in an innovation mode. And, it’s not IT companies, but manufacturing conglomerates that rule the roost, going by the maximum number of patents filed. That’s not all.

A SundayET analysis of the latest intellectual property rights (IPR) data has found that even two PSUs figure in the top 10 companies that filed maximum number of patents during 2006-07 and 2007-08. In fact, the number of patent applications in FY08 was 21% more than FY07.

Whereas India’s largest consumer products company Hindustan Unilever (HUL) filed 251 patents in the last two fiscals, pharma majors Ranbaxy and Cipla filed 208 and 53 patents, respectively, during the same period, the analysis has found out. Tata Steel filed 45 patents, and according to sources in the government, most of the Tata Motors’ 40 patents are connected to its Rs 1-lakh car Nano.

Among the top 100 tech companies in India, almost 89 have not filed any patent applications as yet. During FY07 and FY08, India’s top two exporters of software services TSC and Infosys Technologies filed 14 and 22 patents, respectively.

Corporate India’s growing interest in filing patents is a reflection of the country’s increasing economic and R&D activities and the realisation that new products are to be IPR-protected.

“The sheer number of patents being filed by India Inc is an indication that more and more innovations are taking place now. For some industries, filing patents may not be so important. ONGC, for example, filed just three patents in the last two fiscal years, and Reliance Industries filed just seven patent applications,” an official in the ministry of commerce and industry said.

Among Navratna companies, Bharat Heavy Electricals (BHEL) topped the list of filing patents with 36 applications, followed by Steel Authority of India (SAIL) with 23 and Indian Oil Corporation (IOC) with 10. Some of the Navratna companies, including National Thermal Power Corporation (NTPC), GAIL (India), MTNL, Power Finance Corporation (PFC) and Bharat Electronics, have not file a single patent in the last two fiscals.

In fact, during 2007-08, the government received 35,067 applications and granted 15,262 patents. Though India Inc has come forward to file more patents, the number of patents filed by prominent education and research organisations far exceed that of corporate India.

Whereas Council for Scientific and Industrial Research (CSIR) has toped the over-all list with 1,741 patents filed during FY07 and FY08, Indian Institute of Technology (IITs) stood second with 90, followed by Indian Council of Agriculture Research’s (ICAR) 27.

Monday, June 02, 2008

The last few years have witnessed substantial buoyancy in economic growth in emerging markets, especially India. A number of multinational companies, eyeing a piece of the India growth story, have undertaken transactions/ acquisitions which could directly or indirectly involve India-related assets. Media reports in the past have indicated that the revenue authorities are closely examining such transactions to ascertain whether appropriate Indian taxes have been paid on such transactions/acquisitions. In the context of a transaction executed by Foster’s Australia—a part of Foster’s Group Ltd—with SABMiller Plc., Foster’s Australia had approached the Authority for Advance Rulings (AAR) to seek determination of its tax liabilities in India owing to the transfer of Foster’s brand intellectual property, Foster’s trademarks and Foster’s brewing intellectual property.The relevant facts of the case before AAR are summarized below:Foster’s Australia, a leading international company engaged in brewing and marketing beer products, held a certificate of registration in India with respect to trademarks pertaining to the Foster’s brand. It had entered into a brewing licence agreement with Foster’s India Ltd, a Foster’s Group company. It had also granted Foster’s India an exclusive right to use the Foster’s trademarks in the territory of India. Subsequently, Foster’s and SABMiller executed an India sale and purchase (S&P) agreement which, inter alia, included the transfer of Foster’s brand intellectual property and trademarks to SABMiller in India. In addition, SABMiller was also granted an exclusive, perpetual and irrevocable licence of Foster’s brewing intellectual property in India by virtue of the S&P agreement. The S&P agreement was executed in Australia.Position unclearThe Income-tax Act, 1961, contains a deeming provision whereby certain income streams arising to non-residents (including foreign companies), directly or indirectly from a business connection, from any property in India, or transfer of a capital asset situated in India, would be subject to tax in India. The Act does not explain the circumstances under which capital assets such as trademarks, brands, etc., can be said to be situated in India. Hence, in what circumstances a property or an asset could be considered to be situated in India remained a vexed issue, especially in the case of trademarks and the like.The contention raised by Foster’s before AAR was that the transfer of trademarks and other intellectual property rights amount to transfer of capital assets and the situs, or where the property is treated as being located for legal purposes, of such assets was located outside India. Accordingly, the consideration thereof cannot be subject to tax in India.

Sunday, May 18, 2008

Pravin Anand is known as the leading IP lawyer in India. So, I’m very excited and thankful to Mr. Anand for taking some time out of his busy schedule to clarify the often mysterious law regarding domains in India.You can find a brief biography of Mr. Anand here.You can also find out more about Mr. Anand’s legal career and how he got into intellectual property law in this interview by Halsbury India.

How does the INDRP process work?

The INDRP (.in dispute resolution policy) works in a similar fashion as the WIPO URDP Proceedings. The .In registry has a set of rules which may be found on their web site www.inregistry.in. The detailed process is set out here.

How common are INDRP proceedings?

.In disputes are becoming increasingly common. This is especially so because an extra ordinary number of .in domain names have been registered. Recently these registrations crossed the 400,000 mark. Cyber squatters are the main cause of such domain name disputes. However the .in registry has been very proactive in dealing with such squatters, including awarding compensation to the complainant, which is a step that the WIPO URDP has never taken. So far 53 domain name disputes have been decided by the IN registry over the last 2 years.

What is the test for “bad faith” under the INDRP?

As per Paragraph 4 (iii) of the INDRP, in order to successfully adjudicate a dispute, the Complainant is required to prove that the disputed domain name was registered in bad faith.

Under paragraph 6 of the INDRP, the definition of bad faith is given as follows:

-Evidence of Registration and use of Domain Name in Bad FaithFor the purposes of Paragraph 5(iii), the following circumstances, in particular but without limitation, if found by the Arbitrator to be present, shall be evidence of the registration and use of a domain name in bad faith:(i) circumstances indicating that the Registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, who bears the name or is the owner of the trademark or service mark, or to a competitor of that Complainant, for valuable consideration in excess of the Registrant’s documented out-of-pocket costs directly related to the domain name; or(ii) the Registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Registrant has engaged in a pattern of such conduct; or(iii) by using the domain name, the Registrant has intentionally attempted to attract Internet users to the Registrant’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of the Registrant’s website or location or of a product or service on the Registrant’s website or location.

In one of the very first complaints to be decided by them i.e. the case of www.hindustanpetroleum.co.in, it was found that a Respondent registers a domain name using a trademark in which he has no right or legitimate interests will be found to be operating in bad faith. Again in the case regarding domain name www.vodafone.co.in the Arbitrator found that bad faith was established if the Complainant could prove its rights to said trademark and thereby proved that the disputed Domain Name has been registered intentionally only for the sole purpose of selling it to Complainant and only for making money from the Complainant. More recently, in the dispute for www.rediff.in, the registry accepted as evidence of bad faith, the willingness of the Respondent to sell the disputed domain name to the Complainant for a sum of money.

What are the practical differences between the INDRP and the UDRP?

Since the INDRP relies heavily on the Arbitration Act 1996 and Indian Evidence Act 1897, the rules as to procedure differ slightly from URDP. INDRP pleadings are required to be more detailed then URDP and make room for written statements and replications/rejoinders. Therefore INDRP Complaints more closely resemble Court pleadings than their international cousin.

Practically, it is pertinent to note that the INDRP panelists may call for the Complainant and allow for personal hearings, which is unheard of in URDP proceedings.

Another important difference between the UDRP and the INDRP is that under the UDRP, a Complainant can not be compensated by the cyber squatter upon winning the action. The WIPO UDRP powers extend only in so far as transferring the disputed domain name to the rightful party. However, NIXI has been innovative in dealing with cyber squatters and has begun awarding the victim companies/persons costs in order to deter cyber squatters.

After decisions like Computer.in, Business.in and Internet.in, are owners of generic .in and .co.in domains in danger of losing their name?

There has been a lot of concern over cases where seemingly generic terms were taken away from their owners by .IN Domain Name Dispute Resolution Policy (INDRP). The INDRP has also expressed the view that since Generic terms are considered public domain and usually given no protection under UDRP because the words are widely used, allowing registration certain terms like Internet.in would offer an unfair competitive advantage to the owner. Trademark owners of generic words can take heart in the fact that generic domains are available for registration on a first come, first serve basis under the INDRP and that the case of Internet.in may well be considered the exception not the rule.

What the .In case law indicates that the registry’s main requirement is that the domain name must be registered in good faith and with the intention to use the domain name for legitimate commercial reasons.

Thus the rulings of the INDRP, in general, seem consistent along the lines that if the respondent does not have a legitimate business use for the domain or it is construed that the owner has registered the name with the sole purpose of selling the domain, then the complainant is awarded ownership of the domain.

Are the owners of acronym domain names (such as three letter domains) in danger of losing their names?

After the srcm.in decision, there has been a lot of worry about acronym domain names. However, much of this worry seems to be misplaced. A closer reading of the decision proves that bad faith was found by the Panel on the grounds that the disputed domain name was deceptively similar to the Complainant’s trademark. Further, the Respondent had no explanation for why he was using the said acronym as his domain name. As such honest adopters of domain names have little cause for concern.

How can a domainer look up registered trademarks in India?

Registered trademarks can be looked up on the patent office web site which iswww.ipindia.nic.in/. However one needs to know the registration number in order to look up marks.

A piggy bank is also maintained by the registry. To gain access to the piggy bank, a formal request needs to be made to the Registry in writing. Similarly one may apply for an extensive trademarks search with the Trade marks Registry in order to receive such information.

Are there any other relevant laws that Indian domainers need to be aware of?

Apart from the INDRP rules, the Indian domainer needs to be aware of the provisions of the Trade Marks Act 1999 (amended). This is especially so as the Indian Courts have declared that domain names operate in the same fashion as trade marks in attracting and maintaining the consumers’ goodwill and cases such as Yahoo! Inc. v. Akash Arora & Anr. Indian Courts have held that trademark law applies with equal force on the Internet as it does in the physical world.

As previously mentioned the INDRP relies heavily on the Arbitration Act 1996 and the Indian Evidence Act 1897. As such any domainer looking to register or dispute ownership of domains in India should familiarize himself with these statutes.

In terms of laws relating specifically to the Internet, the domainer should be familiar with the following Acts and Rules:

·IT ACT 2000·IT Amendments Bill 2006

The domainer should also be aware of the URDP, as the INDRP relies heavily and borrows consistently from the ICAAN domain name decisions.

Are there any restrictions on registering Indian “adult” domains?

The Government of India some years back established the Computer Emergency Response Team, or CERT-IN, as a means to monitor all incoming and outgoing Internet traffic from India. Currently, there is no established law as to which websites the government censors, or when. In the past, mainly pornographic and anti-establishment political websites have been blocked.

Adult web sites are restricted as being against public morals and decency. Most registrars and hosts will not register or host web sites which contain adult contents including pornography, warez sites etc. However the discretion as to what the “adult” material is has been left entirely to the registrars and hosts of web sites.

If you were in charge, what changes would you make to the INDRP to make it fairer to both trade mark holders and domainers?

While the INDRP policy has so far been quite fair on both trade mark holders and domainers, if anything recent cases such as the hotel case and job.in cases have shown that the Registry is willing to give the respondents / non trade mark holders the benefit of doubt. The policy of the INDRP seems to be “innocent until bad faith is proved” which is a higher standard than many other country level domain name dispute agents.

The INDRP has no provisions for appeal herein. As such an important and much welcomed change would be the introduction of an appeal process against the INDRP judgments. Further there is not much transparency as to exactly how the Panelists are selected in INDRP disputes. Careful selection of Panelists based on knowledge and experience in both Cyber and trademarks law would be a welcome change in this field of law.

What future developments do you see in this area of law?

As Internet law will continue to grow as will the need not only for lawyers familiar with Internet issues but also advisors who will assist their clients with issues related to the Net.

Further given that there is no easy or quick method whereby to check up on registered trademarks, an important future development might be to introduce such a procedure. For example have a list of well known and registered trademarks on the INDRP web site or uploaded unto an easily accessible database. This would not only avoid confusion at a later stage but also allow the registrars and complainants alike a certain amount of security.

Further another major problem most trademarks owners face is the race for registration of domain names under their trademarks every time a new extension to domain names is released, e.g. .in, .asia etc. A seamless domain registration could be introduced. This would work such that upon payment of said premium fee, the trademarks owner has secured domain names of existing and future extensions as and when they are released without having to go through the painful process of racing to register a domain name every time a new extension is introduced.

Wednesday, April 30, 2008

NEW DELHI: The US government has put India on its 'Priority Watch List', along with nine other countries, saying that the country's failure to protect Intellectual Property Rights is putting health, safety and jobs of its citizens at risk.

"Pirates and counterfeiters don't just steal ideas; they steal jobs, and too often they threaten our health and safety," said the US Trade Representative Susan Schwab, while commenting on the United States Trade Representative (USTR) 2008 Special 301 Report.

Besides India, the US has put countries like China, Russia, Pakistan, Argentina, Chile, Israel, Thailand and Venezuela in the list.

"Countries on the Priority Watch List do not provide an adequate level of IPR protection or enforcement, or market access for persons relying on intellectual property protection, in absolute terms and or relative to a range of factors such as their level of development," the report said.

It added that identified countries "will be the subject of particularly intense engagement through bilateral discussion during the coming year". Last year too, the US administration had put India on its watch list under "section 301" and threatened to impose trade sanctions for violating IPR.

Later, the Indian government adopted a slew of measures to check violation of IPR, including strong patent laws.

The report has placed a total of 46 countries on the watch list that have failed to provide an adequate level of Intellectual Property Rights protection.

The US report on global IPR violations also focused on growing problem of internet piracy and counterfeiting of pharmaceuticals and other products that, it claimed, threatened the health and safety of consumers around the world.

Section 301 sanctions have always made countries pay more attention to their Intellectual Property Protection policy as non compliance might lead to Trade Sanctions but the question that whether such methods adopted by United Sates is in compliance of WTO norms remains unanswered.

Monday, March 10, 2008

NEW DELHI: The pharmaceuticals and airline industries have attracted the attention of the competition regulator for indulging in allegedly anti-competitive activities. The Competition Commission of India (CCI) has called the pharmaceutical industry for a dialogue on the anti-competitive practices in the sector, seen as a prelude to action against offenders when the government notifies the regulator’s enforcement powers.

The commission is expected to tell companies and industry associations how certain practices in pricing, trade and retail do not reflect the spirit of competition. The commission is also expected to tell companies how much pricing liberty they could take from the monopoly rights they get by way of intellectual property protection to inventions.

Competition law sets the contours of IPR rights and acts as a check against its abuse. Besides, the pharma sector is known for its lack of transparency on how brands are priced in relation to quality. It is often the costliest brand in the market that sets the benchmark in prices with the rest of the industry pricing products close to it.

If the commission comes out with guidelines related to pricing of Drugs who enjoy monopoly rights due to their Patents it would be really helpful in addressing issues related to providing access to essential medicines, which is of grave importance in a developing country like India who has to protect the patent rights and also see to it that people have access to such essential medicines these guidelines would be really helpful in creating a balance between the two.

Google lodges patent application for reading text in Images and Videos. Can this application help in curbing piracy in Youtube.

A patent application lodged by Google in July 2007 but recently made public seeks to patent a method where by robots (computers) can read and understand text in images and video.

The extension of the application would be that images and video indexed by Google would be searchable by the text located within the image or video itself, a big step forward in indexing that has not previously been available.

This Invention might be an answer to the a series of Infringement cases including the much publicized Viacom dispute which google is faced with.

Google has been working on this filtering tool for quite a long time this might be an answer to curb copyright violation on websites like Youtube where majority of the content posted is in violation of copyright.

Though the DMCA provides for take down policy through notification to the Intermediary this method has not been quite effective, considering the amount of users in YBoutube it is very difficult to monitor the content as 1000 's of video are being uploaded on Youtube every minute this filitering tool might be an answer to this problem and will come a long way in protecting copyright owners.

Copyright owners could include in their video that the video is copyrighted then this application could detect such a word in the video and could prevent uploading of such videos.

A full copy of the patent application “Recognizing Text In Images” can be viewed here

Wednesday, October 24, 2007

ICL and IPL the battle may lead to the CourtsSify.com reports some excerptsIndian cricket board vice president Lalit Modi may sue media magnate Subhash Chandra for using 'Indian Cricket League' (ICL), a name he claims has been his "personal property" for many years."We are pursuing it, our lawyers are looking into it - what the legal ramifications are as far as that (ICL name) is concerned," Modi told IANS. Chandra's Essel Group is organising a breakaway ICL Twenty20 tournament from October-end in India.Asked how Essel Group could use it if he had the Trademark for the ICL name, Modi said: "That's a matter that will be debated in courts tomorrow (in days to come), not now."Asked if he was planning to sue the Essel Group, Modi said: "When the time is appropriate it will happen. What is the hurry in this?’’"That is why I am saying that this matter is sub judice now ... I mean, it is being looked at by our lawyers, and as and when they are ready with it they will take appropriate action at that point in time."Modi said he got the ICL registered under his name in the mid-1990s, though at that time it was supposed to be a limited-overs inter-city tournament that never materialised.Will IPL's name change to ICL if he files and wins the case against Essel Group?Modi answered in the negative. "No. This (IPL) is the board property. That (ICL) is my personal property."Approached for reaction, Ashish Kaul, executive vice-president of Essel Group, sounded unperturbed. "I ask Mr Modi that if he has indeed Trademarked ICL, then why has he kept quiet for almost a year?" Kaul asked.The BCCI on Thursday announced an ambitious IPL with $3 million on offer as prize money and the Champion's Twenty20 league, to be contested by top two domestic teams from India, Australia, England and South Africa, with $5 million up for grabs.Chandra, on the other hand, has set aside a corpus fund of Rs.1 billion for ICL and has signed the likes of former West Indies captain Brian Lara to lead one of the six city teams that will take part in the tournament.It sees quite strange that Essel group who is planning to invest more than a Billion rupees never looked into the possibility of registering the Trademark ICL now assuming that Mr Lalit Modi has registered the Trademark ICL as claimed by him there is nothing under the Trademark Act, 1999 to prevent the registration of ICL under absolute or relative grounds under Section 9 and Section 11 of the Trademarks Act. The defence available to Essel group in such a case would be to attract Section 47 1 (b) of the Trademark Act, 1999 under which any bona fide non-use for a continuous period of more than five years from the date of which the trade mark is actually entered in the register as in this case the Trademark was registered in mid 1990s as this name has not yet been used by Mr Lalit Modi as claimed by him that his plans to use ICL never materialised this would amount to non-use of a Trademark, the Courts have also upheld the ground of non-use of Trademark for cancellation of a registration of Trademarks in many case like P.M. Diesels Pvt. Ltd. v. Thukral Mechanical Works and The Intellectual Property Appellate Board 2006(32)PTC269(Del) and M/s. Veerumal Praveen Kumar v. M/s. Needle Industries (India) Ltd. and anr. 93(2001) DLT600 also looking into the fact the amount of investment and effort already made by the Essel group unlike Mr Lalit Modi who never used his registered Trademark the courts would be quite reluctant to uphold the Trademark registered by Mr Lalit Modi. It would be quite Interesting to see how the court treats this case if it ever makes to the court.

Tuesday, September 04, 2007

Genuine: - Whenever we buy a Genuine Software we get a key with it, once we insert the key it gets validates by the server of the software manufacture.

Fake: - A trail version of the software is downloaded from the Internet and then a crack is inserted to make the trail version into a full version. If the genuine software is on a CD or DVD then these CD or DVD cannot be copied as they have a encoding so Image mounting software like ISO is used.

Solution: - Most of these cracks for software are available from the Internet, these sites where postings of cracks are done should be monitored and the cracks posted on these sites should be invalidated from the server of the software manufacturer so when a person validates his software through the company’s server it gets blocked or a software which acts like a crawling spider which Google uses to updates millions of WebPages being uploaded on the Internet, this software crawls through the web and finds out any changes and updates the servers with new information if such a software is used it will be quite easy to monitor such posts being uploaded, crack sites should be banned by search engines like Google, Yahoo and MSNfrom their search list and ICANN should also not register sites havingcracks in their Domain Names.

With regards to Image mounting software they should be either banned or not made available commercially. Image mounting software is used only when there is a copyright material on a CD or DVD as only these will be encoded and Image mounting software are bound to be used for copying Copyrighted Material.

Another problem being faced by the software industry is peer to peer software like LimeWire almost all the software being uploaded on it are copyrighted material the only solution in these case I can think about is to request Networks like Gnutella network on which most of the peer to peer software’s operate to Monitor copyrighted material being uploaded on the Internet which I know is going to be very difficult another option is to make users sign a Click Wrap Agreement before they upload that they are not uploading any copyrighted content.

Music and Movies

Data from Original DVD and CD cannot be directly copied so ripper software’s are used to rip Movies and Music from original DVD and CD such software’s should be banned or not commercially made available.

These are just solutions to reduce the amount of piracy, piracy as whole cannot be eradicated, and for that people have to refrain from using pirated software.